Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Tuesday, 30 November 2010

The ONEL/OMEL trade mark dispute, born in the Dutch corner of the Benelux (see for example earlier IPKat posts here, hereandhere) is now set for export to the Luxembourg portion of it. To remind readers, at the heart of this is NOT so much a dispute between two traders, one of whom wants to stop the other registering a similar trade mark for identical services. Rather, it's about a matter of principle: in order to prevent a later national trade mark being registered, must the opponent's earlier Community trade mark have been used in more than one of the 27 Member States of the European Union in order to establish genuine use of that mark?

Excitedly posting on MARQUES' Class 46 weblog earlier this afternoon is the IPKat's good friend Gino van Roeyen, who explains that today the Court of Appeal of The Hague has suggested referring the following complex questions to the Court of Justice of the European Union for a preliminary ruling:

"1. Should Article 15(1) of the Community Trade Mark Regulation be interpreted in such a way that the use of a trade mark within the borders of one Member State is sufficient, provided that this use, if the trade mark would be a national trade mark, would be considered to be normal use in that Member State (compare Joint Statement no. 10 to Article 15 ... and the Opposition Guidelines)

2. If no, is use within one Member State never normal use within the European Community as referred to in Article 15 of the Community Trade Mark Regulation? If yes, which requirements are applicable with regard to the territorial scope of the use of a trade mark – apart from the other circumstances -- to assess a normal use within the Community?

3. If the answer to question 1 should be in the negative, should the assessment of normal use within the Community be abstracted from the borders of the territory of the separate Member States and solely linked up with the market shares of the trade mark (and/or other factors) on the various markets within the Community?"

It's not yet known whether the parties will be happy with these questions, or whether they may wish to fine-tune them. Further information is likely to appear on the Dutch IP weblog Boek9.nl before the IPKat gets to find out.

Are you sitting comfortably? Have you fastened your safety belts? Yes? Then here we go! This morning in Virgin Atlantic Airways Ltd v Delta Airways Inc [2010] EWHC 3094 (Pat) Mr Justice Arnold, sitting in the Patents Court for England and Wales, did something that not many judges do -- he gave summary judgment in favour of a defendant in a patent infringement action. The defendant was Virgin's airline rival Delta and the subject of the dispute was the famous Contour chair which this Kat, for one, has never curled up on and is, unless he finds a way to grow money, unlikely to do so.

The judgment has only just come out and this Kat implores his fellow-Kats who are more patent-oriented to get their claws into it for some real legal analysis.

Note: since posting the above note, the IPKat has received the following piece from law firm Taylor Wessing. He thought it was a very useful summary:

"This is the latest of a series of legal skirmishes, both in the UK and at the EPO, involving Virgin's Patent for flat-bed seats. The Judge dismissed the action against Delta Airways for infringement of Virgin's flat-bed patent by way of joint tortfeasance with Delta's seat manufacturer, Premium Aircraft Interiors (Contour). He did so on the grounds that there was no primary act of infringement by Contour and so by definition Delta could not be a joint tortfeasor. This is not likely to be the end of the story - it is expected that Virgin will seek permission to appeal the decision.

In granting summary judgment, by striking out Virgin's claim as having no real prospect of success, the Judge has done something fairly extraordinary in a patent case. Patent cases are hardly ever appropriate for summary judgment, primarily because patent cases are so dependent on expert evidence. However, in this case, because of the prior history of the long-running dispute between Virgin and Contour (the seat manufacturer that helped design and manufacture Virgin's Upper Class Suite (UCS) business class seats), that culminated in the European Patent Office hearing in September this year, the judge felt able to make his decision without requiring further expert evidence.

However, also, and perhaps even more significantly, the judge seriously called into question (and with substantial reasoning) the doctrine of infringement of a patent by supplying a "kit of parts" as a separate head of infringement under section 60(1)(a) of the Patents Act 1977. That doctrine, under the current law, had arisen in two previous English cases, Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 and Lacroix Duarib SA v Kwikform (UK) Ltd [1998] FSR 493. In his analysis (probably the most detailed analysis of the point anywhere since the Community Patent Convention (CPC) of 1975 had the effect of harmonising the national patent laws of a number of European states), he also considered the law on this point as it applied in other CPC states and concluded that the supply by a UK defendant of an incomplete "kit of parts" to a customer outside the UK could not infringe a UK patent but also that the supply of a complete "kit of parts" to such a customer should also not infringe either under section 60(1)(a) or section 60(2) of the Patents Act 1977".

Monday, 29 November 2010

IPKat team member Jeremy had a fascinating discussion with Kay Chapman a couple of months ago. Kay is Communications and Information Specialist, CAS-IP (that's the Central Advisory Service on Intellectual Property of CGIAR -- the Consultative Group on International Agricultural Research. In case you've not come across CGIAR before [and you jolly well ought to have, since it has been mentioned at least twice on this blog before], it's

"a global partnership that unites organizations engaged in research for sustainable development with the funders of this work. ... The work they support is carried out by 15 members of the Consortium of International Agricultural Research Centers, in close collaboration with hundreds of partner organizations, including national and regional research institutes, civil society organizations, academia, and the private sector".

The Fund Council includes the World Bank, the Bill and Melinda Gates Foundation and national governments as diverse as the United States, Brazil and Iran. Anyway, CGIAR has been doing some thinking about its attitude to, and relationship with, intellectual property rights. Let Kay explain:

In a public research environment, IP and IA management can be a tricky subject, sometimes even met with suspicion. There can be little doubt that managing IA effectively is required to fulfil the goals of the institutes within which we work.

In the context of agricultural research what do we mean when we talk about IA management? The term IA covers all intellectual assets (results, information, articles, publications, know-how, new plant varieties, etc.) whether or not they are protected by intellectual property rights (by which we mean copyrights, patents, trademarks, plant variety protection, etc.).

Effective IA management is crucial to facilitate the exchange of research outputs as well as to support trust in collaborations. It is also required to deal with issues such as access, ownership and exploitation of the outputs produced.

The message from a recent and comprehensive Review of the CGIAR’s own Intellectual Property unit (CAS-IP) was clear and direct:

“We firmly believe that the management (or mismanagement) of intellectual property will be a primary factor in determining the future of the CGIAR's contributions to agricultural innovation systems that will help ensure global food security, poverty alleviation and environmental sustainability”.

Do you have any thoughts about IA management in the agricultural research for development purposes? What should IA management focus on if you need to ensure benefits are available for the public good? What should or shouldn’t we do with the results of publicly funded research?

The Review mentioned above was commissioned by CAS-IP's main donor, the Dutch Ministry of Foreign Affairs (DGIS), first to evaluate CAS-IP's activities. In light of the CGIAR reform process, DGIS also requested that the Review Team extend the scope to include the broader context of intellectual asset management in the CGIAR. Given the fundamental importance of IP/IA management, it will not be ignored as the new structure of the CGIAR emerges. Details of exactly what form IA management will take have not yet emerged.

Further to the publication of the Review of CAS-IP, a public consultation process has been set up online. Any comments will be compiled and officially added to the report, we hope for use by the agricultural development community at-large, as well as to inform the new Consortium Office".

The IPKat is fascinated by all of this. What should organisations like CGIAR be doing with the results of agricultural research, apart from making sure that everyone who needs to use them can get access to them? Should the organisation's role be confined to describing and databasing research results, or is its money better spent on building up and policing agricultural IP portfolios for the beneficial exploitation and management of those rights for the greater good? Or is the notion of a greater good illusory? Do tell Kay what you think!

You can see a one-page discussion document of the Review hereor browse the results of the Review here
To contact Kay Chapman, just email her here.

The only people to have colleges named after them in both
Oxford and Cambridge are Jesus, St John, Wolfson ...
and CATS!

Holy Cats! IP scholar Justine Pila, much revered and respected by the IPKat, has informed him that she and the equally revered Graeme Dinwoodie are running a half-day seminar on Comparative Perspectives on Protecting Products by Patents. This is just one of a series of events with this dynamic due is organising over the next few years around the theme "The Common Law of Intellectual Property in an Era of Europeanisation" [That's a mouthful, says Merpel, but I like the acronym, CLIPEE!]. Speaking will be Mr Justice Floyd, Daniel Alexander QC, and Professor Rochelle Dreyfuss on issues relating to the patentability of products and the scope of protection which patents confer on products. The first seminar takes place from 2 pm to 5 pm at St Catherine's College, Oxford (here) this Saturday, 4 December 2010. Says Justine: "It is free and all are welcome; CPD accreditation has also been applied for".

Extended passing off: an extended
headache for makers of drinks that sound
like generic products

What with all the fuss and excitement about the forthcoming Royal Wedding and IP conference, the IPKat has quite forgotten to remind readers of another event that is close to his heart: the 15th annual Intellectual Property Law Developments conference, which takes place on 24 January in Central London. Unusually for a serious event, this programme features some very serious bloggers among the speakers: Matt Fisher (from the IPKat team), David Musker (Class 99) and Hugo Cox (The 1709 Blog). Two of this year's biggest attractions, however, lie outside the blogosphere: Tony Clayton (Chief Economist, Intellectual Property Office) speaks on "IP and Government Spending" and Baker & Mackenzie's Ben Allgrove, no doubt still celebrating the recent acceptance by the High Court that there is such a thing as initial interest confusion in British and European trade mark law, tackles the scope of the recently-extended tort of passing off. And now for the competition! JK Rowling seeks your advice as to the title of the next Harry Potter book (the one she said she'd never write) on how Harry and his friends graduate from Hogwarts and secure gainful employment within in the World Intellectual Property Organization. The title must begin with the words "Harry Potter and the ...", but the rest is up to you. The prize: free registration for the IP Law Developments conference and an even freer lunch! Email your entries (which won't be acknowledged unless there aren't very many of them) to the IPKat here, with the subject line "". Closing date, 10 January 2011.

Not all games in court end
with an order of indemnity costs

Around the blogs. The Kat's friend Richard Kempner (Kempner & Partners) has provided PatLit with a juicy item: a claimant in patent litigation proceedings, reprimanded by a normally mild-mannered judge for playing games in court and being ordered to pay indemnity costs. IP Finance carries a report on a court ruling on assessment of "user" damages for trade mark infringement, just one week after this note on calculating damages for loss of brand value. Russians and Cypriots who wonder whether the US Federal Court has personal jurisdiction over them in patent infringement actions might find this note on PatentlyO worth reading. The 1709 Blog succinctly summarises the issues and the ruling in NLA v Meltwaterhereon whether end-users of an online media monitoring service require a licence from the owners of copyright in the works monitored and.

Several readers, of whom Barry Teobald was first, have been nudging the IPKat to tell the world about Facebook's application to register the word FACE as a US trade mark. According to Techcrunch

"Facebook is just a payment away from trademarking the word “Face.” As of today the U.S. Patent And Trademark Office has sent the social networking site aNotice of Allowance, which means they have agreed to grant the “Face” trademark to Facebook under certain conditions.

All Facebook needs to do is pay the issue fee within three months of today and the “Face” trademark will be issued and be published in the official USPTO gazette ....

For all intents and purposes today’s status update bodes well for Facebook’s hold over “Face” usages in “Telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.”

While it seems so bizarre that a company should have the right to trademark a word as common as “Face” apparently the USPTO isn’t at all disturbed (what’s with the “related to motoring or cars” restrictions?). ...

Update: A commenter points out that aside from the issue fee, Facebook will have file a Statement of Use and use the trademark on its own in commerce before it has actual legal claim over the word “Face.” Right now it only uses the word “Face” in conjunction with “book,” but that will have to change if it wants to have any right to the trademark".

The IPKat doesn't think that any corresponding application has been filed in Europe, but is prepared to be corrected by his readers. Merpel also thought it odd that the application sailed through without any oppositions or objections, but couldn't think offhand of any existing registrations or brands that would be threatened by use of the word FACE for the Class 38 services listed. Again, readers' responses are welcome. Perhaps the last word should do to Aidan Clarke (Marks & Clerk), who is quoted in a media release as saying:

"“... not every company with the word ‘face’ as part of its brand should necessarily be worried. The protection in the US at least covers only a very specific category of commercial enterprises within a sub-sector of the telecommunications space, namely the sorts of activities that comprise online social networking. ‘Fatface’ the clothing company and Apple’s ‘FaceTime’ software, to name but a few examples, have nothing to be concerned about. Not unless Facebook begins extending its brand beyond the social networking sphere.”".

Never mind FACE -- Warner Bros has run off with the trade mark the name of the Harry Potter school-game QUIDDITCH for lingerie, reports the eagle-eyed Kingsley Egbuonu on the basis of this Reuters report. Not just lingerie either, but dust ruffles [What on earth! exclaims the IPKat]. This doesn't actually seem to be red-hot news, since Warner Bros has been quietly registering QUIDDITCH for a variety of items since 1999 -- but what's news is the plans the long-dead Brothers have been making for keeping their coffers flowing even once the world tires of the Harry Potter film sequence.

Recently published. Release 33 of Sweet & Maxwell'sEuropean Patent Decisions,which updates the Looseleaf to August 2010, has now been dispatched and should be in the hands of subscribers soon, if they have not already received them.

A slightly delayed delivery (to our readers) of some good news for Deutsche Post, Germany's equivalent of the Royal Mail. Several German websites recentlyreported that the German Federal Federal Patent Court (Bundespatentgericht) decided in favour of the Deutsche Post's appeal against the cancellation of its trade mark for "POST".

The background: back in 2003 Deutsche Post had applied for a trade mark registration for the mark "POST" covering different services in connection with postal services. Several of Deutsche Post's competitors later filed for a cancellation of the mark, inter alia, citing descriptiveness objections under § 8 (2) No. 2 MarkenG (German Trade Mark Act). The German Trade Mark and Patent Office (DPMA) subsequently cancelled the mark. After the Federal Patent Court had initially confirmed the cancellation, Deutsche Post appealed this matter all the way to the German Federal Supreme Court (Bundesgerichtshof). The Bundesgerichtshof, however, decided in favour of Deutsche Post's appeal and sent the case back to the Federal Patent Court for a final decision which in turn has now decided the case in Deutsche Post's favour.

Trying to find the actual decision, this Kat has found a press release issued by the Federal Patent Court concerning this case which consists of the headnotes of "POST II" as the case has been aptly named. Please find this Kat's strictly unofficial translation of the headnotes below.

1. To prove 'use as a trade mark' for a service mark, it can suffice to apply a work mark in and on a business premise.

2. The application of the word "POST" at the entrance of a business premise and on sale counters inside a business premise does not only constitute use as a business name (firmenmäßige Benutzung) but also constitutes use as a trade mark in relation to the delivery and transport services offered [at that business premise].

3. Having regard to the Bundesgerichtshof's precedent (GRUR 2009, 669 pp., No. 28 - POST II) a degree of more than 75% attribution in a market survey to the business of the trade mark owner concerning transport and delivery services is to be regarded as sufficient for proving acquired distinctiveness of the sign POST in the sense of Article 8 (3) German Trade Mark Act, which was per se capable of being descriptive.

4. If the deciding senate is convinced that there are no legal or factual doubts concerning the correct method and content of a market survey that has been commissioned, then that survey is suitable to prove acquired distinctiveness of a trade mark in trade. In such a case there is no need - also not according to the principle of official investigation - to commission a further market survey during cancellation proceedings. Rather, the cancellation applicant has to adduce counter-evidence concerning the falsity of the market survey and, where appropriate, has to commission and submit a further market survey.

Sunday, 28 November 2010

The IPKat has been keeping an eye on events in Stockholm, where there has been a good deal of excited discussion -- most of it in Swedish -- about the outcome of the Pirate Bay prosecution. The Kat can now tell his readers what has happened, thanks to this press statement, issued by none other than appellate judge Ulrika Ihrfelt on Friday, 26 November. According to this statement

"The Court of Appeal has today pronounced its judgment on the so-called Pirate Bay case.
The defendants were charged with aiding perpetrators of copyright infringement. The infringements had been committed by internet users who used the Pirate Bay website for file sharing.

Mr Neij, Mr Sunde Kolmisoppi and Mr Lundström are all sentenced to imprisonment for the aiding of copyright infringement. However, the term of imprisonment is reduced in relation to the sentence of the district court.

The Court of Appeal sentenced Mr Neij to ten months imprisonment, Mr Sunde Kolmisoppi to eight months and Mr Lundström to four months. The reason for this reduction is that the act of complicity has here been considered on a more individual basis. The District Court found that all the defendants were responsible for everything that had taken place within the framework of the Pirate Bay. According to the judgment of the Court of Appeal, each one will be punished only for the acts he has committed himself. The Court of Appeal has, so to speak, taken an individual rather than a collective approach when evaluating the facts of the case.

The court has found that some acts which the prosecutor has claimed to be parts of an illegal activity have not been proved. Others have been found not punishable. For instance, the court has found the activities of Mr Sunde Kolmisoppi in his role of a spokesman for the Pirate Bay project do not constitute a criminal offence. This is related to the freedom of the press which includes a freedom to make statements to the press. With regard to Mr Lundström; the court did not find enough proof for the allegation that he was a party of a contract according to which an external host owner was guaranteed a certain share of the profits. This is one of the reasons why his sentence is considerably reduced.

There are also other minor differences compared to what the district court found. But the Court of Appeal shares the overall view of the District Court's evaluation of the criminal case.

When it comes to the damages; on the other hand, the Court of Appeal has increased the amounts to a certain degree. The Nordic Film Companies will get full compensation according to what they have claimed. The other injured parties will get only a marginal increase. Their compensation will still be less than half of the total claims.

The court was unanimous on all aspects of the judgment".

Further information has been made available by The Guardian, which reports that the collective fine was increased by $2m (£1.3m) to $6.5m (£4.1m) but that, following the ruling, Sunde vowed to take the appeal "to the highest court". Posting on Twitter in Swedish, Sunde's message translates as "It's going to be an appeal to the highest court, so don't worry". According to The Guardian,

Defence lawyers for Neij and Lundstrom said they were not surprised but disappointed by the ruling and confirmed that they would probably appeal to the European supreme court [A bit of a problem, here, since there isn't one]. The court's verdict was wrong, Sunde continued, adding: "They should make a better judgment and read the [evidence files].

"It's a good thing you don't get punished for expressing yourself, but a bad thing you get punished for things that don't exist." [Something might be lost in translation here]

The four Pirate Bay co-founders were ordered to pay damages to 17 different music and media companies including Sony BMG, Universal, EMI, Warner, MGM and 20th Century Fox, having being found guilty of making 33 specific files accessible for illegal sharing.

Neij, 32, must now serve 10 months in prison; Sunde, 32, will serve eight months, and Lundstrom, 50, will serve four. Svartholm, the youngest of the four at 26 years old, will have his case heard at a later date [he wasn't in court, citing illness, says the report].

Charges against the seven-year-old Pirate Bay site had been brought by the music trade body the International Federation of the Phonographic Industry (IFPI) on behalf of some of the rights owners.

Says the IPKat, with this appeal the incredibly sad affair of The Pirate Bay draws closer to its end. Although the outcome of the appeal is that the convictions have been affirmed, really we are all the losers. The recording industry has suffered much adverse publicity and has incurred heavy expense in seeking to enforce its lawful rights; The Pirate Bay's operators have been hit both in pecuniary terms and through their loss of personal liberty; consumers have been hurt too, through the raising of expectations that all their cultural requirements could legitimately be met at no cost through file-sharing. With the benefit of hindsight, film companies might have moved earlier to provide faster, cheaper access to their products. If they had done, they might -- and it can't be stated more strongly than might -- have been able to head off the self-help action that erupted in end-of-the-line militant, dissident markets such as Sweden. But this was not to be.

It is hoped that we can move on now, and make a fresh start. There are many film-lovers who must learn again to respect the film companies and to understand their cost structures, their investment, their risks -- and their creativity. On the other side there are many film companies who must learn again to see their audiences as their friends and partners -- not as their cash cows or their enemies. With mutual respect, film-making and distribution can be a mutually rewarding experience. Without it, audiences will rebel and film investment will wither.

Now that the cold north winds have begun to truly blow winter onto London's stone streets, one can easily be forgiven for retreating into the warmth of their homes until spring. Having spent a blustery evening walking along the South Bank on Wednesday, a frigid journey from Farringdon to Holborn on Thursday, and a freezing walk in Marylebone on Saturday, the AmeriKat herself is still nursing frozen paw pads and refuses to go outside once more. However, the AmeriKat was reminded last week that during the winter we all (people and Kats alike) become more insular and that instead of burrowing up next to her warm radiator, she should instead be spending the dark winter days volunteering at the Battersea Dogs and Cats Home - who have just celebrated their 150th Anniversary. The AmeriKat will be donating some of her reserved Christmas money and time to the shelter this year as part of their Kitty Kabin drive, and she suggests that all you cat and Kat lovers alike do the same for this most deserved charity. To do so, please click here.

Oracle wins $1.3 billion in largest copyright infringement jury award

Someone else that may have spare funds ready for some charitable donation is Oracle, who last week was awarded $1.3 billion by a California jury in the copyright infringement case brought by Oracle against SAP in 2007. Oracle is the second largest supplier of business-related software after SAP. SAP had not contested liability, so all was remaining was for the jury award on damages, which is reported to be the highest copyright infringement award ever in the U.S. According to a report this afternoon, SAP plans to file a post-trial motion in an attempt to reduce the award.

Oracle, a California-based company who specialize in developing hardware and software systems, sued SAP, a German based software company, after learning that the US based subsidiary of SAP, TomorrowNow had allegedly made hundreds of thousands of illegal downloads and copies of Oracle's software to avoid paying for Oracle's licence fees. According to the complaint, TomorrowNow had been downloading and using Oracle's software to provide technical support to customers of Oracle's recently acquired companies in order to lure them to buy software from SAP, rather than from Oracle. An attorney for Oracle, Geoffrey Howard, said that the scale of TomorrowNow's infringement was "unprecedented." TomorrowNow was acquired by SAP in 2004 for $10 million and, according to Oracle's lawyers, knew of the unauthorized acquisition of Oracle's software by TomorrowNow prior and subsequent to SAP's acquisition and for this reason kept TomorrowNow as a separate operating company in order to provide SAP a shield from liability.

According to the jury's foreman, the scope of the jury's deliberation on the quantification of the award was limited to quantifying the notional reasonable licence fee that would have been agreed between SAP and Oracle, rather than loss profits of potential sales by Oracle. Orcale's expert witness had suggested $1.65 billion, but the jury reduced this figure by $350 million - this is still $1.26 billion more than SAP's suggestion of Oracle's actual loss. The difference between the two side's suggested figures of course being that Oracle was arguing for a reasonable licence fee, whereas SAP was arguing for actual loss of profit flowing from Oracle's loss of customers which they claim to have been only about 86.

Regardless of how the jury elects to assess damages, jury awards hold another benefit (if you are a claimant), or problem (if you are a defendant), in that the method and means of calculation used to arrive at these figures will not be forthcoming. The problem with jury awards has previously been illustrated in Microsoft's saga in the i4i litigation (see previous AmeriKat posts here). But according to the foremanthe jury came to a figure that they thought

"For more than three years, SAP stole thousands of copies of Oracle software and then resold that software and related services to Oracle's own costumers. Right before the trial begun, SAP admitted to its guilt and liability; then the trial made it clear that SAP's most senior executives were aware of the illegal activity from the very beginning."

Unfortunately, the 11-day trial did not see the appearance of Leo Apotheker's video testimony. Apotheker, SAP's former CEO and now the CEO of Hewlett-Packard CEO, was cited by the outspoken Oracle CEO, Larry Ellison, as having overseen TomorrowNow's illegal Oracle downloads. At trial, however, Oracle decided not to show Apotheker's statement and had said it was unable to subpoena him to appear. According to Bloomberg Business Week, HP spokesperson's Mylene Mangalindan has said that the subpoena was

"no more than an effort to harass him and interfere with his duties and responsibilities as HP's CEO."

Bill Wohl, a spokesperson for SAP, said that SAP would pursue all possible options, including a possibility for an appeal. He stated that:

"This will unfortunately be a prolonged process and we continue to hope that the matter can be resolved appropriately without more years of litigation."

The case, besides holding interest due to the scale of the award, has shaken up the software industry. The manner in which the field of third party technical support in the software industry operates will most likely be subject to some serious self-reflection in the wake of the award. Further, the litigation has revealed some bad blood between all three major competitors - SAP, Oracle, and HP - and if the jury award is appealed, it is anyone's guess what other battles will be seeping out of Silicon Valley.

Sarah Palin and Gawker settle over leaked book excerpts

Gawker has settled with HarperCollins last week following Judge Thomas Grisea's order that the news and blog-orientated website Gawker remove leaked pages of Sarah Palin's new book, America By Heart, from it's website. The order came after a tweet from Palin's Twitter account stating

"The publishing world is LEAKING out-of-context excerpts of my book w/out my permission? Isn't that illegal?"

Had Gawker fought the order, they would have had to resort to the doctrine of fair use. However, many legal commentators have stated that Gawker had nowhere to run following a 1985 US Supreme Court decision of Harper & Row Publishers v Nation Enterprises which held that The Nation's unauthorized publication of a 400 word excerpt from an over 600 page autobiography of former President Ford did not qualify as fair use. Although the now removed Gawker post had their own commentary interspersed between Palin's work, which could have arguably benefited from the fair use defence due to its transformative nature, it is the fact that the leak came just days before the book's publication that would have been the nail in any defence. Like in Nation Enterprises and in the recent Salinger case (see previous AmeriKat posts here), US courts take a dim view of publication of literary excerpts prior to actual publication due to the US court's recognition of the potential economic impact that such leaks may have on the initial sales of a book - copyright law, if it has anything in the US, has an entrenchment in economic philosophy after all.

According to a statement by Palin's publisher, the Murdoch-owned HarperCollins, the two parties have come to a settlement whereby Gawker will remove and will not post any excerpts from the book online. According to The New York Times, the rival to Murdoch-owned Wall Street Journal (see AmeriKat posts here), the editor in chief of Gawker, Remy Stern, stated in an email that

"HarperCollins' decision to file suit against us and seek a temporary restraining order generated a good deal of press for Ms. Palin's book in advance of its publication. Now that the book is out and destined to appear on the best-seller list, we're pleased that HarperCollins proposed settling this case as is, thus avoiding lengthy litigation for both sides."

The AmeriKat agrees with Stern. Had Gawker not been subject to the injunction, she would not have even known Palin was coming out with another book. The AmeriKat is annoyed that Gawker allowed itself to be used as a promotional vehicle to move books off shelves due to failing to comply with copyright law. Gawker may however not see it that way given that their profile has undoubtedly been raised by this matter and can continue to promote itself as a provider of unedited and unadulterated content to its readers, even if on the wrong side of copyright law in this case.

This case is a lesson to those tempted to publish unpublished excerpts of biographies, especially political ones - report on its content, don't just publish its content.

Microsoft win in China over pirated software

If you are like the AmeriKat and are increasingly monitoring IP enforcement in China, last week's news of Microsoft winning a copyright infringement lawsuit against a Chinese internet cafe chain in China may come as a welcome surprise. According to the China Briefing website, Microsoft was reported to have been seeking a reported 1.5 million yuan or $225,000 (although this number varies drastically between different reports) for use of unauthorized software, however the actual award was not disclosed. For more information please see these reports here and here, or indeed if anyone has any better information on this case please let the IPKat know.

Friday, 26 November 2010

"Joint ownership of IP" -- no words strike more terror into the heart of an IP practitioner than the task of having to provide appropriate contractual provisions in such a situation. Truth be told, while I hardly relish this prospect, I can understand the urge to champion a joint ownership arrangement in an era of increasingly collaborative research and development. While it may be an exaggeration to say that joint ownership is a legal exigency when collabaration is concerned, I cannot deny that there may well be a plausible rationale for a client's insistence on a joint ownership relationship in such circumstances.

Less certain, however, are the arguments made in favour of joint ownership of a trade mark. If the bedrock rationale for the trade mark right is that the mark serves as an indicator of source, then a situation in which there are, as it were, two owners of the mark seems difficult to square with the notion of a trade mark as an indicator of source. For this reason, perhaps, I encounter fewer requests from clients for joint onwership of trade marks than for other IP rights. Fewer requests, but certainly not a null set; from time to time, an insistent client will instruct to draft a joint ownership arrangement--and the challenge to do so is renewed.

Against this backdrop, one of the most vexing provisions is the question of what happens to the rights in the trade mark in the event that the agreement between the joint owners come to an end. Here, as well, the issue of how to dispose of the rights in the trade mark upon termination of the joint ownership must take into account the underlying principle that a trade mark is an indicator of source. What are the options? Here are some of my thoughts on this matter.

1. Allow both joint owners to each continue to use the mark after termination- I admit, this sounds far-fetched. However, it is not out of the realm of possibility if the emotive juices of the two owners will win out, especially if each of them wishes to continue to be engaged in the relevant field of interest ("What! Let the goodwill go to waste: what, let the mark go to my erstwhile partner!") Also, courts on occasion have given recognition to shared goodwill in a mark. As for the owners themselves, if we take the view that it is up to the parties to be concerned about consumer confusion, and if they are prepared to assume the risk, what is the principled reason not to allow them to go forward on this basis?

2. One owner purchases the mark and licenses it the other owner-- This is a version of no.1 to the extent that both former owners can in principle continue to use the mark after termination. Whether the parties want to go through the exercise of entering into a full-fledged licence agreement and, if so, whether one of the former owners is willing to settle for being a licensee (even an exclusive licensee), are open questions.

3. Provide a contractual mechanism to allows one party to receive full rights in the mark and to compensate the other party-- Under this view, if both parties want to continue to use the mark, the party ultimately willing to pay more for it will receive full ownership. There are various forms of "buy me\buy you" clause, the effect of which is to determine which owner values the mark more highly. This kind of arrangement may work better when both owners have some interest in continung to use the mark. If not, the owner with no ongoing interest might want to push a provision that authorizes the offer for sale of the mark to third parties, with a right of the other owner to match any such third party.

4. Set a purchase price in the agreement-- Here the parties agree at the outset who will own the mark upon termination. The price can be a certain sum (although that might be somewhat difficult to fix at the outset) or can be based upon some objective formula that itself is tied to commercial activity under the mark prior to termination.

5. Sell the mark to a third party/allow use of the mark to lapse whereby neither party can continue to use the mark-- This approach has a plausible sound of equity. If there is a willing buyer for the mark, why not sell the mark and share the proceeds equally. If not, in the name of fairness, let the mark lapse. If one or both owners wants to continue in the business, let it/them do so, but not under the mark previously owned and supported by the two owners.

I have no doubt that there are other possible forms of disposition of trade mark rights following termination in such circumstances. Maybe the easiest thing to do is not enter into a joint ownership agreement of a trade mark from the outset.

It's Friday again, time to reflect not on what might have been but on what hasn't yet been. The best way to do this is by checking the IPKat's Forthcoming Events list, which you can conveniently access here.

Kat rant. Earlier this week an extremely annoying person sent the IPKat a letter, purporting to be from someone else, which this blog published in good faith on the assumption that it was genuine. The author of the letter should be ashamed of himself. No-one minds a little harmless fun, or even a little controversy -- but it is quite beyond the bounds of acceptability to submit for publication a piece which, the author knows, may affect the professional standing and the integrity of another member of the IP community. As it is, the letter in question not only caused a lot of embarrassment and upset but has also wasted a good deal of the IPKat's own time. The IPKat receives a large volume of post and cannot be expected to verify the identity and the bona fides of every correspondent. He respects and trusts his readers as his friends and as part of an extended IP community which covers most countries in the world -- and in return he expects to receive the respect and trust of the rest of that community. For now he proposes to take no further steps (though he has a shortlist of suspected perpetrators), but he feels that the very least that the author of the hoax letter can do is to write and apologise to the person whose good name and reputation he was so callously prepared to toy with for the sake of making a pathetic political point.

Around the blogs. The IPKat's friend and regular JIPLP author Paul England (Simmons & Simmons) wrote a jolly good note for PatLit on the Solvay reference to the Court of Justice on cross-border injunctive relief for patent infringements in Europe (details in English are still a bit hard to come by). The 1709 Copyright Blog has now posted two lots of entries (here and here) in response to the challenge to complete the sentence "If music be the food of love, then copyright is ..." Afro-IP has made some progress in its quest to discover the real story behind the commercialisation of Ethiopia's coffee brands, here.

Do not disturb: parliamentary
draftsman at work

It's not often that the IPKat publishes a comment posted on one of his items as a separate feature in its own right, but this anonymous contribution was too good not to share. Yesterday the Kat commentedon Shanks v Unilever, a decision on the meaning of a somewhat obscure passage of statute law relating to the entitlement of an employee inventor to receive compensation where his invention has conferred an outstanding benefit on his employer. An anonymous correspondent commented that he had trouble understanding the case: could someone please summarise it for him? Before the IPKat could lift paw to pen, another correspondent posted this:

"On a brief reading, the decision is about deciding whether you should consider the earnings of an actual person or the earnings of a hypothetical person, whether the past earnings you should consider are the actual earnings the actual person actually made, the hypothetical earnings the actual person didn't actually make, or the hypothetical earnings a hypothetical person could actually have made, and whether the hypothetical future earnings you should consider should be the actual earnings the actual person will actually make hypothetically based on the actual earnings they did actually make, the actual earnings the actual person could hypothetically make hypothetically based on the hypothetical earnings they didn't actually make, the hypothetical earnings the actual person could hypothetically make based on the actual earnings they actually made, the hypothetical earnings the actual person could hypothetically have made based on the hypothetical earnings they didn't actually make, or the hypothetical earnings the hypothetical person could hypothetically have made hypothetically based on the hypothetical earnings they could actually have made".

Couldn't have put it better myself, purrs the puss.

The Harrods 'Supreme':
a snip at £1,250

Coming soon. British IP practitioners who are in search of some pre-Christmas IPReg CPD points may need reminding of an attractive little event on 15 December, run by London IP and held at the magnificent headquarters of the Chartered Institute of Patent Attorneys. Further details of this reasonably-priced get-together (£50 + VAT) are available on SOLO IP here. Says the IPKat, compared with the price of a Harrods Christmas hamper (here), you can see what a bargain this event actually is!

Survey response. The IPKat's survey question ("The subtle art of comparison: your chance to vote", posted here), has at the time of drafting this round-up attracted nearly 600 votes together with nearly 30 comments, some of which are most perceptive. This vastly exceeds the response level for any previously-posted poll. There are still four days till the poll closes, following which the IPKat will explain in more depth why it is that he asked whether the two signs in question were likely to be confused with one another.

Like the EU patent, the perfect pizza
requires the subjugation of each
individual ingredient for the good
of the whole

Many of the readers of this blog also avidly follow developments as they unfold on EurActiv. Those who do will not have been disappointed by today's offering, "An EU patent without Italy? Member states turn up the heat". It runs like this:

"Italy found itself in a political squeeze [Merpel says, it makes a change from the squeezes apparently preferred by that country's Prime Minister: see here and here] on Thursday ... as several key European countries moved to create a unified patent to protect the design of products sold across their borders.

The European Commission presented its proposal for an EU-patent a decade ago, but negotiations have been bogged down by linguistic, technical and legal difficulties. [deleted: boring repetition of how expensive patenting is in Europe, the usual recital of how inconsistent are its judicial decision and the popular assertion that the outcome of patent disputes would be more predictable if there were only one court]

The Commission presented in July a proposal to end the deadlock over linguistic disputes. The EU commissioner in charge of the dossier, Michel Barnier, proposed to maintain English, French and German as official languages for an EU patent but to allow paid-for translations of patents filed in other EU languages [which would work well in practice, but not in principle since ...] ... this is opposed by other member states, including Spain and Italy.

The Belgian Presidency said overcoming legal and linguistic problems would be a top priority during its six months at the helm of the European Council. A number of compromise proposals have been circulated and five competitiveness Councils have been scheduled during the six-month presidency, which ends in December.

At the last Competitiveness Council on 10 November it was clear negotiations had hit a serious impasse.

After more than a decade of frustrating negotiations to draft a single patent for the 27-nation bloc, a group of countries have decided to go it alone [This shows that the EU is not a one-size-fits-all entity and that there's room within its rules for a surprising degree of diversity and creativity].

Sweden, Germany, the United Kingdom, Ireland, the Netherlands, Slovenia and Estonia said they will formally ask the European Commission to help them write a common patent agreement based on "enhanced cooperation" between those countries. More EU member states are welcome to join the pact.

It was a bold and rarely used tactic to pressure Italy to drop its demand that Italian be one of the official languages of an EU patent. Without Italy's vote, the EU Council of Ministers – which represents the bloc's 27 governments – did not have unanimous support behind a proposal for an EU patent that would be translated into English as well as French or German, the three working languages of the Union.

"It's clear we could not reach an agreement in the foreseeable future," said Swedish Minister for Enterprise and Energy Maud Olofsson. ...

[More standard regurgitation of the need for an EU patent deleted]
The single patent is a critical piece of several EU strategies, including the single market and the Innovation Union. "I don't think we can afford the luxury of not growing competitively," said Frenchman Michel Barnier, the EU's commissioner for the internal market and services [Says Merpel, this is a rare and delightful concession by a Frenchman that we can't afford luxuries. Tell that to the European Court of Justice in Case C-487/07 L'Oreal v Bellure, as criticised by the referring court here. The only reason why luxuries are luxuries is that we can't afford them and they're protected against competition].
He said he would act rapidly on the request for enhanced cooperation on a new patent, and present a proposal to the Competitiveness Council at its meeting on 10 December.
This would mark only the second time that member states have used the side door of enhanced cooperation to sidestep blocking members. In July, 14 countries – including Italy, Spain, Germany and France - agreed to simplify divorce rules for couples of different nationalities.

This time, however, Italy appears ready to fight any proposal about enhanced competition on patents. "This is not possible," said Giuseppe Pizza [real name: not a spoof, despite the title of the EurActive article], Italian secretary of state, claiming such action would undermine the internal market of the EU.

Surprisingly, Spain is no longer insisting that Spanish also be an official patent language, while Poland took Italy's side and requested another round of negotiations. France, the Czech Republic and Malta all said they were prepared to explore and analyse a Commission plan for enhanced cooperation on a patent. Such a patent would need the participation of at least nine member states. It would have to be approved by a qualified majority in the Parliament and the Council, but only participating members would be allowed to vote in Council, according to legal staff.

"It's high time for those who wish to move forward with a higher form of cooperation to do so," said Peter Hintze, a German secretary of state. "The world is changing so quickly and the speed of change is accelerating. We cannot wait." [Actually we can. Change always takes time and it's better to get it right. It has not been demonstrated that the speed of change in the world at large has been affecting the scheme for the grant of patents in Europe as they are now]."

The plot thickens.

History of the pizza here
English pizza recipes here
European patent for the new, improved pizza here

Thursday, 25 November 2010

In the olden days, before paparazzi were invented,
the popular press had a dreadful time getting wedding pics ...

A royal wedding is an exciting event – and not just for the friends and family of the couple. The wedding is now expected to give a £620 million boost to the economy, much of which will come from the sale of souvenirs and other memorabilia. But amidst all the excitement, the IPKat cautions his readers, it is important to ensure that IP rights are protected, whether this means preventing infringement of trade marks or design rights, protecting privacy or blocking (or, says Merpel, promoting) ambush marketing.

The Royal Wedding and IP conference which the Kat mentioned earlier this week is now nearly up and running. There will be a competition, of course, and lots of serious law, plus CPD points for anyone who has to work for a legal living. The programme will look something like this:

The Royal Wedding And British Business: Intellectual Property Perspectives

Date: 8 February 2011 (venue: not yet decided, but probably not Westminster Abbey)

IPKat team member Jeremy will be in the chair. After the formal welcome, warnings about fire drill and good news for diners about the availability of a vegetarian option, the order of ceremonies goes as follows.

* Weddings, Coronations and other Royal Events: how do they bring IP business to Britain? (David Morris, WilmerHale)

This handy device is useful for
dealing with unwanted flies in court ...

When one sees the words "fly" and "Shanks" in a shared context, many a reader may involuntarily summon up an unsavoury image of annoying insects hovering around a leading brand of bathroom fixtures, However, this is far from the case with today's post.

Back in December 2009, in the Patents Court for England and Wales, Mr Justice Mann gave a ruling in Shanks v Unilever plc and others [2009] EWHC 3164 (Ch), noted here by the IPKat. The case was a dispute over Professor Shanks' claim for compensation as an employee inventor. The Patents Act 1977, sections 39-42 provides a set of rules for dealing with employees' inventions, as well as for rewarding those inventors whose patents are particularly beneficial to their employers.. Anyway, Mann J's decision hinged on the interpretation of the Patents Act 1977, s.41 which provides, in relevant part:

"An award of compensation to an employee ... in relation to a patent or an invention shall be such as will secure for the employee a fair share (having regard to all the circumstances) of the benefit which the employer has derived, or may reasonably be expected to derive, from the patent or from the assignment, assignation or grant to a person connected with the employer of the property or any right in the invention or the property in, or any right in or under, an application for that patent ...

(2) ... the amount of any benefit derived or expected to be derived by an employer from the assignment, assignation or grant of–(a) the property in, or any right in or under, a patent for the invention or an application for such a patent; or

(b) the property or any right in the invention; to a person connected with him

shall be taken to be the amount which could reasonably be expected to be so derived by the employer if that person had not been connected with him" (emphasis added)

So what were the facts? Shanks' invention led to a patent for measuring activities which was later used in blood testing kits for diabetics. In June 1984 his employer, Unilever Central Resources, transferred the patent to a related company Unilever plc for a nominal consideration. After an initially slow start, Unilever plc licensed its use to various persons and derived licence royalties of around £23m [Enough to buy a reasonably good soccer star, notes Merpel, but not to pay his wages].

Having commenced proceedings for compensation under the Patents Act 1977, s.40, Shanks applied to admit a supplementary statement of case that required consideration of the true interpretation of the words 'that person'. According to the hearing officer, 'that person' referred back to a connected person, and thus referred to that specific person, modified only by considering what that specific person would have done if such a person had not been connected with the employer. He explained his reason thus:

"If a hypothetical person had been intended, the legislator could have said "a person" instead of "that person". As a matter of English, the use of the word "that" would seem to clearly indicate that the specific person previously identified is the one referred to".

He then refused the application. Shanks' appealed successfully to Mann J. The judge was asked to consider whether the 'deemed counterparty' to the hypothetical transaction was the actual counterparty with the connection element removed, but with all the other attributes of that person in place, or whether it should simply be treated as being a normal unconnected arms-length purchaser with no special attributes. In his view Parliament, in using the formulation in question, had intended to refer to a notional non-connected counterparty operating in the appropriate market at the appropriate time. That understanding was not inconsistent with the assumption, in the case of other actual transactions leading to benefits, that an employer was likely to want to exploit the patent properly and not give away its benefits, even though the words used did not impose a positive obligation on the employer to do so. The words 'that person' could not sensibly be taken as being the actual purchaser: to do so would risk introducing absurdity into the hypothesis, leading to absurdity in the result. He said:

"42. I therefore conclude that the hearing officer's final formulation of the meaning of "that person" in section 41(2) is wrong. One does not treat that person as being the precise real person with all the same characteristics (commercial warts and all) as that person has but simply without the connection. I consider that in using the formulation that it did, Parliament was, perhaps a little clumsily, intending to refer to a notional non-connected counterparty operating in the appropriate market at the appropriate time. This is not inconsistent with its assumption (in the case of other actual transactions leading to benefits) that an employer is likely to want to exploit the patent properly and not give away its benefits, albeit (as I have observed) that it did not impose a positive obligation on the employer to do that.".

"31. The Judge only departed from the "natural meaning" of "that person" as meaning the actual assignee because he thought it could produce uncommercial results. But that was predicated on the basis that one is to exclude the known facts about exploitation. Once one brings them in the uncommercial results fall away. And in any event the Judge's conclusion can lead to equally uncommercial results the other way [as Jacob LJ demonstrates earlier in his judgment].

32. In truth this is one of those provisions which is so ill-drafted ... that one has to be guided by its evident purpose (ascertainable from the paradigm case) to ascertain its meaning. My old head of Chambers, Thomas Blanco White QC, used to call this approach to construction of an ill-drafted provision "sewing the fly buttons on the statute"".

The IPKat wonders how many young readers are even familiar with the fly button, the cause of many a problem for whose with poor dexterity or whose fingers were numbed by lack of central heating.

Wednesday, 24 November 2010

Thanks to some sterling efforts on the part of the IPKat's honoured and revered friend Ava Miller, we now have a set of notes on yesterday evening's seminar on the role of the IPEC (the US Intellectual Property Enforcement Coordinator) and whether it might be appropriate to consider adapting this role for use in the UK. Since Ava's notes run to not much short of 3,000 words, we've loaded them into the back pages of the blog itself and you can read them by clicking here.

The IPKat understands that there is a distinct possibility that a political initiative will be launched soon to investigate further whether the practice and the principle of coordinated intellectual property enforcement can and should be made workable. More of that in the future. Meanwhile, all the Kats can say is

"thanks, so much, to everyone who attended -- those who spoke from the front, and those who bravely spoke from the floor. Your presence and your contributions were very much appreciated".

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